Google Takes Offense, Takes Offensive (for a change)

According to Search Engine Journal, perennial trademark infringement defendant Google has filed suit against Froogles.com, an online shopping site. The New York federal complaint is here. Google has already lost against Froogles at the ICANN level, the site reports. Don’t confuse with Froogles.com with Froogle.com, which is a Google site. Does that figure into the claim now? Take a look and let me know!

4 comments

Well, that certainly looks pretty infringing… although I note that the footer of the froogles site claims it’s been around since 2001. It’s been a long time since I’ve cracked a trademark case, refresh my memory: can an unregistered mark used in commerce before a registered mark get some kind of priority?

Without McCarthy’s to hand, the basic rule is — as has been noted here before — TM rights are based on USE, not registration. Registration gives perks (presumptive notice, presumptive national scope, like that), but not the core rights.

So the short answer is: Yes, an unregistered senior user will have some rights as against the registered junior user.

(Longer answer…)

Let’s say back in 1945 I start a local donut shop called “Dunk-a Donut.” I build up a nice basis, a good reputation for excellent donuts and good coffee, etc. But it’s only in the North NJ area. And (of course) I don’t register. Then in 1950 (you can see where this is going) Dunkin’ Donuts opens up shop up in MA, and (shrinking history for the sake of hypothetical) proceeds to Federally register *and* expand to stores all over the country, but doesn’t get to North Jersey until 1955 or so.

When they finally get to North Jersey and want to shut me down, I get to tell them to back off. I don’t get to open up my shop in California, and I don’t get to tell them to stop operating their business in California, but I can tell them *at least* to stop trying to shut me down and (I’m pretty sure) I can actually tell them to stop with their infringement in the North Jersey area — and probably in NYC and South Jersey, too, as a “natural zone of expansion.”

On only the facts of this post and the previous comment, then I’ll assume Froogles is a senior, unregistered user. (There is a registration for FROOGLES, but it’s not definitively tied to the froogles.com in question, and in any event it’s 2003, which wouldn’t be relevant.)

On that assumption, it is (as I recall) most likely:

(1) Froogles can continue to do business as it has been “since 2001.” In this case presumably maintaining the website and conducting what is apparently its main business. What limit a court would put on that is hard to anticipate, though if there is any limitation on the type of goods that Froogles was dealing with, I’d think of that as a possible lever.

(2) Froogles can expand to the extent of the “natural zone of expansion” for its business — a concept that is rooted in a geographical conception of doing business, but that will port, even if with some sloppiness. So, for instance, if Froogles has only ever done clothes, it might be reasonable to let it expand to accessories and shoes, but not electronics.

(3) In so far as Froogle overlaps with what Froogles is doing, Froogles would have an argument to stop Froogle. Again, these ideas evolved as questions of geography, so it’ll be a sloppy port.

From a two minute surf, Froogle does (basically) comparison shopping (leveraging off the search engine core of Google). Froogles does some of that, but is more on the lines of an online mall/deal center. It’s not impossible to draw a line between these two forms of use, but it’s a little bit of a stretch. There’s no apparent limitation on the sorts of goods dealt with on either site.

Checking the WayBack Machine, there is evidence that Froogles has been around in a form approximating its current form since early 2002 (the 2001 page is a placeholder). On the other hand, Froogle in its current form doesn’t show up until Feb. 2003.

So… without looking at the pleadings, and with only the bare minimum facts, it looks like Froogles has a pretty good place to stand.

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The Title, the Blog and the Blogger

The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid. I write here about trademark law, copyright law, brands, free speech (mostly as it relates to the Internet) and legal issues related to blogging. That may sound like a lot, but it's just a blog.

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